The CAFC addresses the meaning of "flitch"
The district court construed the term “flitch” as “a portion of a log resulting from the log being cut along its longitudinal axis and thus having a taper at the butt end of the log.” J.A. 12 (emphasis added). This term appears in every asserted claim. Capital argues that the court’s construction is wrong because nothing in the specifica- tions of the patents-in-suit limits a “flitch” to having a “taper” or a “butt end.” Capital also contends that the fact that some of the asserted claims recite a “tapered flitch” demonstrates that a “flitch” is not necessarily tapered. Capital argues that, because a “flitch” need not be tapered, the term should not be construed to require a “butt end.”
Miller also argues that Capital disclaimed untapered flitches during prosecution of the patents-in-suit before the U.S. Patent and Trademark Office (PTO). During prosecution of the ’619 patent, for example, Capital sought to overcome an anticipation rejection over U.S. Patent No. 5,101,874 (Weil) by arguing that Weil “does not disclose applicant’s invention” because it “does not show, and is silent with respect to, tapered flitches and their cutting.” J.A. 356.
Miller argues that Capital’s statements apply to some claims that simply recited “a flitch” with no mention of a taper. Miller points to similar characterizations of Weil during prosecution of other patents in the same patent family.
We agree that Capital disclaimed untapered flitches during prosecution of the patents-in-suit. The PTO rejected claims from the application that issued as the ’619 patent as anticipated by Weil, including some claims that expressly recited “a tapered flitch” and others that recited only “a flitch.” See, e.g., J.A. 348 (claim 1); J.A. 351 (claim 22). In response to these rejections, Capital argued that Weil “does not show, and is silent with re- spect to, tapered flitches and their cutting.” J.A. 356 (emphasis added).
Through these prosecution statements, Capital sought to overcome anticipation rejections by arguing that its invention, unlike Weil, is directed to tapered flitches. Importantly, Capital made these arguments even with respect to claims that recited only “a flitch,” and thus might not otherwise have been limited to a tapered flitch. This is a clear and unmistakable disclaimer of untapered flitches.
We have held that the prosecution history regarding a claim term is pertinent when interpreting the same term in both later- issued and earlier-issued patents in the same family. Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004). Capital’s disclaimer of scope during prosecution of some of the patents-in-suit therefore ap- plies equally to limit the term “flitch” in the other pa- tents-in-suit. We thus hold that the district court correctly construed the term “flitch” as “having a taper at the butt end of the log” for every patent-in-suit.
Disclaimer during the prosecution of one patent applies to other patents in the same family when the patents are directly related, such as through a parent- child relationship. If the patents at issue are familial, but are not directly related, the question whether disclaimer applies will depend on the facts of the case. Based on the common use of the term “flitch” in the specifications of the patents-in-suit and their familial relationship to each other, we conclude that disclaimer applies equally to each asserted claim.
The meaning of "dogs" arose:
The district court construed the term “dogs” as “[d]evices without movable parts that apply force to grip or retain a flitch on the veneer slicer.” J.A. 14–15 (em- phasis added). This term appears in the asserted claims of the ’137, ’938, and ’843 patents.